Federal Trademark Application

USPTO Federal Trademark Application Overview

Preparing a federal trademark application is the first step in establishing nationwide legal protection of a trademark. Filing a properly prepared and complete federal trademark application may act as constructive use and immediate nationwide trademark priority rights.

If no issues are found during the trademark prosecution, the federal trademark registration process will typically take anywhere from 8 – 14 months. Problems with an application that may effect this timeline include: the type of trademark application used; oppositions to the trademark application; refusals from the examining attorney. The examining attorney’s review of the application includes the determination of the following questions: (1) Whether the trademark functions as a trademark; (2) Whether the proposed trademark conflicts with any existing trademarks; (3) Whether the trademark application satisfies all technical requirements.

The basic process involves the completion of a federal trademark application; review of the application by the examining attorney; a potential first refusal of the trademark application; a response by the trademark applicant or applicant’s attorney; a potential final refusal followed by a response by the applicant or his counsel; appeal of the final refusal; approval of the trademark application; publication for a period of opposition to the trademark; a filing of a statement of use (if an intent to use application was used); and a certificate of trademark registration.

Once the federal trademark application process is finalized and the trademark achieves federal registration on the Principal Register, registration could potentially last forever as long as the trademark stays in use and the owner of the trademark renews every ten years (initial ten year period also requires renewal between years five and six). Renewals require the owner to file affidavits stating the trademark is still in use in order to keep the trademark registration alive.

Filing a properly prepared and complete federal trademark application may act as constructive use and immediate nationwide trademark priority rights.

Types of Federal Trademark Applications

Intent to Use Application

When filing a federal trademark application, an applicant may file based on an intent to use, or a trademark application based on actual use. If filing based on an intent to use, the trademark application must be based on a good faith intention to use the trademark in interstate commerce in the foreseeable future. Filing an intent to use application allows the trademark owner to establish trademark rights before actual use of the trademark begins. However, the USPTO will not issue a trademark registration until the applicant files a Statement of Use or Amendment to Allege Use, demonstrating that it has commenced use of the trademark in commerce. If a trademark applicant files a trademark application based on actual use, this means that the trademark is currently being used in interstate commerce.

Use-Based Trademark Applications

The federal trademark registration process is a lot more complex that it appears. Typically, a business or individual can only establish rights in a trademark by using the actual trademark in commerce. The trademark application filed with the USPTO after commercial use of the trademark is called a “use-based” trademark application. Here, the federal trademark application must contain specimens, which is the evidence showing the trademark currently being used in commerce.

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